walker digital v google (del)

8/11/2019 Walker Digital v Google (Del)

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UNITED ST TES DISTRICT COURT

FOR THE DISTRICT OF DEL W RE

WALKER DIGITAL LLC

Plaintiff-Counterdefendant

V

C.A. No. 11-318-LPS

GOOGLE INC.

Defendant-Counterplaintiff.

Richard D. Kirk Stephen B. Brauerman Vanessa R. Tiradentes Sara E. Bussiere

B Y

ARD

P.A. Wilmington DE

Marc A. Fenster Andrew D. Weiss RUSS

UGUST

KABAT Los Angeles C

Attorneys for Plaintif f Walker Digital LLC

Richard L Horwitz David E. Moore Bindu A. Palapura POTTER

NDERSON

CORROON LLP Wilmington DE.

Jeannine Yoo Sano Eric Lancaster WHITE C SE LLP Palo Alto C

Jason Liang Xu James Gagen WHITE C SE LLP Washington DC

Kevin X. McGann WHITE

C SE

LLP

New

York NY

Attorneys for Defendant Google Inc.

September 3 2014

Wilmington Delaware

MEMOR NDUM OPINION

Case 1:11-cv-00318-LPS Document 311 Filed 09/03/14 Page 1 of 24 PageID #: 8965


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c ~

?

u

STARK U.S. District Judge:

Pending before the Court is Defendant Google, Inc.' s ( Google or Defendant ) motion

for summary judgment of

invalidity

of

U.S. Patent No. 5,884,270 ( the '270 patent ) and U.S.

Patent No. 5,884,272 (''the '272 patent ) for lack ofpatentable subject matter. (D.I. 250) The

parties completed briefing on May 7, 2014. (D.I. 289) The Court held oral argument on August

26, 2014.

See

Transcript ( Tr. )) For the reasons discussed below, the Court will grant

Defendant's motion.

B CKGROUND

Plaintiff Walker Digital, LLC ( Walker or Plaintiff' ) filed this case against Google and

several other defendants on April 11, 2011. (D.I. 1 Walker subsequently entered into license

agreements with all defendants except Google. See D.I. 4, 19, 34, 37, 72, 95, 224) Google filed

its answer and counterclaims against Walker on July 15, 2011. (D.I. 38) The Court construed

certain claim terms of the patents-in-suit on July 25, 2013. See D.I. 231, 232) The parties have

completed fact and expert discovery. See D.I. 233) No trial date has been set. See D.I. 52

r 20)

Walker asserts that Google infringes independent claims 1 and 23 and dependent claims

2, 5, 10, 11, 24, 27, 32, and 33

of

the '270 patent, as well as independent claims 1 and 65 and

dependent claims 2-4, 9-11, 19, 27, 28, 31, and 32 of the '272 patent. (D.I. 105 at 1 n.1) Both

patents contain nearly identical specifications, were filed September 6, 1996, and issued on

March 16, 1999. (D.I. 100 Ex. A, B)

The '270 patent is entitled Method and System for facilitating an employment search

ther motions filed

by

both sides are also pending and will

be

denied as moot.



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incorporating user-controlled anonymous communications.

The

'272 patent is entitled Method

and System for establishing and maintaining user-controlled anonymous communications. The

patents relate generally to controll ing the release of confidential or sensitive information of at

least one of the parties

in

establishing anonymous communications. ('270 patent col. 1:11-14;

'272 patent col. 1:11-14)

Google contends that the asserted claims of the patents-in-suit are invalid under 35 U.S.C.

1 1

due to lack of patentable subject matter because the claims are directed at

a

purely mental

process that could

be

performed without the aid of a computer. (D I 251 at 6) According to

Google, the claimed invention is directed to nothing

more

than the abstract

idea

of

an

exchange

of information about people, long practiced by human matchmakers, simply appended to a

general computer system to accelerate the process.

(Id.)

Google essentially argues that

[

]his

is similar to the kind of 'organizing human activity' at issue in, [and found unpatentable by],

Alice. Planet Bingo, LLC v VKGS LLC, 2014 WL 4195188, at *2 (Fed. Cir. Aug. 26, 2014)

(citingAlice Corp. Pty. Ltd.

v

CLS

Banklnt l,

134 S. Ct. 2347, 2356 (2014)).

Walker responds that Google's arguments lack merit. According to Walker, the Court

may only find the patents invalid for lack of patentable subject matter if the patents preempt the

entire idea of controlled information exchange between anonymous parties. t follows,

in

Walker's view, that

if

it is possible to engage in controlled information exchange between

anonymous parties

in

a manner that does not infringe the patents-in-suit, then the patents are not

invalid for lacking patentable subject matter. (Tr. at 39-41)

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LEG L ST ND RDS

I

Motion for Summary Judgment

Pursuant to Rule 56(a) of the Federal Rules ofCivil Procedure, [t]he court shall grant

summary judgment

if

the movant shows that there is no genuine dispute as to any material fact

and the movant is entitled to judgment as a matter oflaw. The moving party bears the burden of

demonstrating the absence of a genuine issue ofmaterial fact.

See Matsushita Elec. Indus. Co.

Ltd. v Zenith Radio Corp. 475 U.S. 574, 585-86 (1986). n assertion that a fact cannot

e

or,

alternatively, is - genuinely disputed must be supported either by citing to particular parts of

materials in the record, including depositions, documents, electronically stored information,

affidavits or declarations, stipulations (including those made for purposes of the motion only),

admissions, interrogatory answers, or other materials, or by showing that the materials cited do

not establish the absence or presence of a genuine dispute,

or

that an adverse party cannot

produce admissible evidence to support the fact. Fed.

R

Civ. P. 56(c)(l)(A) (B). f he

moving party has carried its burden, the nonmovant must then come forward with specific facts

showing that there is a genuine issue for trial.

Matsushita

475 U.S. at 587 (internal quotation

marks omitted). The Court will draw all reasonable inferences in favor of the nonmoving party,

and it may not make credibility determinations or weigh the evidence. Reeves v Sanderson

Plumbing Prods. Inc.

530 U.S. 133, 150 (2000).

To defeat a motion for summary judgment, the nonmoving party must do more than

simply show that there is some metaphysical doubt as to the material facts. Matsushita 475

U.S. at 586; see also Podobnik v U S Postal Serv. 409 F.3d 584, 594 (3d Cir. 2005) (stating

party opposing summary judgment must present more than just bare assertions, conclusory

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allegations or suspicions to show the existence of a genuine issue ) (internal quotation marks

omitted). However, the

mere

existence

of

some alleged factual dispute between the parties will

not defeat an otherwise properly supported motion for summary judgment; a factual dispute is

genuine only where the evidence is such that a reasonable

jury

could return a verdict for the

nonmoving party.

Anderson

v

Liberty Lobby Inc.

477 U.S. 242, 247-48 (1986).

If

he

evidence is merely colorable, or is not significantly probative, summary

judgment

may be

granted.

Id.

at 249-50 (internal citations omitted);

see also Celotex Corp.

v

Catrett

477 U.S.

317, 322 (1986) (stating entry of summary

judgment

is mandated against a party who fails to

make a showing sufficient to establish the existence

of

an element essential to that

party's

case,

and on which that party will bear the burden of proof at trial ). Thus, the

mere

existence of a

scintilla of evidence

in

support of the nonmoving party's position is insufficient to defeat a

motion for summary judgment; there

must

be evidence on which the

jury

could reasonably find

for the nonmoving party.

Anderson

477 U.S. at 252.

II Lack

o

Patentable Subject Matter

Under 35 U.S.C. 101, [w]hoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new and useful improvement thereof,

may

obtain a patent therefor, subject to the conditions and requirements of this title. There are

three exceptions to 10I's broad patent-eligibility principles: laws of nature, physical

phenomena, and abstract ideas.

Diamond

v

Chakrabarty

447 U.S. 303, 309 (1980). Pertinent

here is the third category. The 'abstract ideas' category embodies the longstanding rule that

an

idea of itself is not patentable. Alice 134 S. Ct. at 2355 (internal citations omitted). As early

as

Le Roy

v

Tatham

55 U.S. 156, 175 (1852), the Supreme Court explained that '[a] principle,

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in the abstract, is a fundamental truth; an original cause; a motive; these cannot e patented, as

no one can claim in either

of

them an exclusive right.' Since then, the unpatentable nature of

abstract ideas has repeatedly been confirmed. In re Comiskey 554 F.3d 967, 977-78 (Fed. Cir.

2009).

In Mayo Collaborative Servs.

v

Prometheus Labs. Inc.

132 S Ct. 1289 (2012), the

Supreme Court set out a two-step framework for distinguishing patents that claim laws of

nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications

of those concepts. Alice 134 S Ct. at 2355. First, courts must determine if the claims at issue

are directed at a patent-ineligible concept.

Id

f

so, the next step is to look for an ' inventive

concept' -

i.e.

an element or combination

of

elements that is sufficient to ensure that the patent

in practice amounts to significantly more than a patent upon the [ineligible concept] itsel Id

Simply appending conventional steps, specified at a high level of generality, [is] not

nough to supply an inventive concept. Id at 2357 (internal quotation marks omitted)

(emphasis in original). In Bilski v Kappas 130

S

Ct. 3218, 3231 (2010), for example, the

Supreme Court held that the claims involved were drawn to the patent-ineligible abstract idea of

hedging, or protecting against risk, which was a fundamental economic practice. Similarly,

in Alice the Supreme Court found that the claims were drawn to the patent-ineligible abstract

idea of intermediated settlement, which was also a fundamental economic practice. 134 S

Ct. at 2356. In both cases, the Supreme Court found that the additional steps delineated in the

claims did not embody an inventive concept sufficient to ensure that the patents amounted to

more than patents upon the ineligible fundamental concepts themselves.

In determining if a patent embodies such an inventive concept, courts may consider



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whether the process is tied to a particular machine or apparatus or transforms a particular

article into a different state or thing. Bilski, 130 S Ct. at 3227 ( [T]he machine-or

transformation test is a useful and important clue, an investigative tool, for determining whether

some claimed inventions are processes under 101. ). [T]o impart patent-eligibility to an

otherwise unpatentable process under the theory that the process is linked to a machine, the use

of the machine must impose meaningful limits on the claim's scope. CyberSource Corp.

v.

Retail Decision, Inc., 654 F.3d 1366, 1375 (internal quotation marks omitted). To be a

meaningful limit on the scope of a claim, the addition of a machine must play a significant part

in permitting the claimed method to be performed, rather than function solely as an obvious

mechanism for permitting a solution to be achieved more quickly. SiR Tech., Inc. v. Int l

Trade Comm n,

601F.3d1319,

1333 (Fed. Cir. 2010). Hence, the mere recitation of a generic

computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.

Alice, 134 S Ct. at 2358. Given the ubiquity

of

computers, wholly generic computer

implementation is not generally the sort of additional feature that provides any practical

assurance that the process is more than a drafting effort designed to monopolize the abstract idea

itself. Id.

Although the machine-or transformation test is a useful and important clue to

determining patentability, it is not the sole test for deciding whether an invention is a patent

eligible 'process. ' Bilski, 130 S Ct. at 3227. [I]n applying the 101 exception, [courts] must

distinguish between patents that claim the building blocks ofhuman ingenuity and those that

integrate the building blocks into something more thereby transforming them into a patent

eligible invention. Alice, 134 S Ct. at 2354 (internal citations omitted). The concern that

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drives the exclusionary principle [i]s one of pre-emption. Id That is, where a patent would

pre-empt use of' basic tools of scientific and technological work, i.e. laws of nature, natural

phenomena, and abstract ideas,

the

patent would impede innovation more than it would tend to

promote it, thereby thwarting the primary object of the patent laws.

Id.

DISCUSSION

I. '270

Patent

Claims 2, 5, 10, and 11 of the '270 patent are all method claims and all depend from the

method claim recited in independent claim

1

Claims 23, 24, 27, 32, and 33 are all system claims

that are directly analogous to the methods recited

in

claims 1, 2, 5, 10, and 11.

Independent claim 1 recites as follows:

1

A method for operating a computer system to

facilitate an exchange

of

identities between two

anonymous parties, comprising the steps of:

receiving from a first party first data including an

identity

of

said first party;

receiving from said first party at least two first-party

rules for releasing said first data including a rule for

releasing said identity of said first party;

receiving from a second party a search request

comprising at least one search criterion;

2

Contrary to Plaintiffs assertion, the inquiry

on

preemption is not whether patents

directed at building blocks of human ingenuity would preempt an

entire

field but, instead,

whether such patents

would

risk

disproportionately

tying

up

the

use

of

the

underlying ideas.

Alice

134 S. Ct. at 2354 (emphasis added);

see also Prometheus

132 S. Ct. at 1294 (holding that

patents [that] would disproportionately t[ie] up the use of the underlying natural laws are

invalid for lacking patentable subject matter);

Gametek LL

v

Zynga Inc.

2014 WL 1665090,

at *5 (N.D. Cal. Apr. 25, 2014) ( A patent need not, however, preempt an entire field to run afoul

of 101; instead, the question is whether the patent 'would risk disproportionately tying up' the

use of the abstract idea. ).

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receiving from said second party second data

including an identity o said second party;

receiving from said second party at least two

second-party rules for releasing said second party

data including a rule for releasing said identity

o

said second party;

processing said search request to determine i said

first data satisfies said search criterion;

and

i

said first data satisfies said search criterion

then exchanging said first and second data except

said identities o said first and second parties

between said first and second parties in accordance

with said first-party and second-party rules after

said exchanging step upon satisfying said first-party

rule for releasing said identity o

said first party

transmitting said identity o said first party to said

second party and after said exchanging step upon

satisfying said second-party rule for releasing said

identity o said second party transmitting said

identity

o

said second party to said first party.

Dependent claim 2 recites:

2 A method in accordance with claim 1 wherein said

step o receiving from a first party at least two

first-party rules includes receiving at least one

first-party rule before receiving said search request

and storing said at least one first-party rule.


5 A method in accordance with claim 1 wherein said

step o receiving from said second party at least two

second-party rules includes receiving at least one

second-party rule before receiving said search

request and storing said at least one second-party

rule.


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10

A method in accordance with claim 1 wherein at

least one of said first-party rules is conditional on

the content of said second data.


11. A method in accordance with claim 1 wherein at

least one of said second-party rules is conditional on

the content of said first data.

Google contends that, in each asserted claim, the claimed invention is directed to

nothing more than the abstract idea of a controlled exchange of information about people that

has long been practiced

by

human matchmakers or headhunters. (D.I. 289 at 5) The patent

specification recognizes that in the prior art, ''to find potential candidates companies would

engage an employment search firm to discretely find potential candidates without disclosing to

the market, or even potential candidates, the company's identity until the company decides to

confide in or hire a particular candidate. ('270 patent col. 2:42-47) Similarly, in the context of

dating, a person could serve as a match-maker by setting up two people with whom he is

acquainted on a blind date. Id. at col. 3:47-49) Given the prior art, the invention was

purportedly necessary to create a system that allows users to [1] exercise control over the release

of

information to others and [2] provides efficient anonymous communication. Id. at col. 4:9-

11)

Plaintiff, through the testimony

of

its expert, Dr. Craig Wills, asserts that the methods and

systems

of

the '270 patent claim more than an abstract idea because the claims contain

meaningful limitations, specifically requiring the following steps:

[

1]

receiving party data including an identity from both a first and

second party;

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[2] receiving at least two rules for releasing party data, including a

rule for releasing identity, from each party;

[ ]

receiving a search request from a second party;

[4] processing the second party's search request to determine

if

party data provided y a first party satisfies the search criterion

used;

[5]

if

the data provided

y

the first party satisfies the search

criterion of the second party's search request, the asserted

independent claims require exchanging first and second party data

except the identities of the first and second party in accordance

with the first and second party rules for releasing their respective

data; and

[

6]

releasing the identities

of

the first and second parties upon

satisfying the first and second party rules for releasing their

respective identities after the exchange of the non-identity first and

second party data.

(D.I. 283

if

12) However, none of these limitations adds anything meaningful to the basic

concept of controlled exchange of information about people as historically practiced y

matchmakers and headhunters - and as disclosed in the patent specification itself.

3

By contrast,

all of these steps could be performed (and have been performed)

y

human beings interacting

with one another prior to the filing of the '270 patent.

3

Although Google did not present expert testimony to rebut Dr. Wills, the Court

concludes that Dr. Wills' testimony raises no material factual disputes between the parties.

Initially, the Court finds that Dr. Wills' analysis is largely conclusory. Additionally, Dr. Wills

contends that the asserted claims cannot e performed without a computer - but, for the reasons

explained in this Memorandum Opinion, even

if

he is correct, that does not save the patent's

claims. Likewise, even accepting as true Dr. Wills' opinion that the anonymous methods and

systems claimed by the patents-in-suit were novel and unknown to those of

ordinary skill in the

art at the time of the invention (D.I. 283 i 15), the Court has concluded (based on evidence,

including the patents' specifications) that these methods and systems are directed to abstract

ideas and do not contain any limitations meaningfully distinguishing the claims from the prior art

practices ofheadhunters and matchmakers.

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To be meaningful, a limitation must consist of some inventive concept;

if

a patentee

contends this is so on the basis that the invention incorporates a machine, the machine must play

a significant part in permitting the claimed method to be performed. On these points, a recent

Federal Circuit case on patentable subject matter is instructive. n SmartGene Inc.

v

dvanced

Biological Laboratories SA

555

F

App'x. 950, 951 (Fed. Cir. Jan. 24, 2014), the patent at issue

claimed a method for guiding the selection of a treatment regimen for a patient with a known

disease or medical condition. Claim 1 claimed:

a method for guiding the selection of a therapeutic treatment

regimen for a patient with a known disease or medical condition.

The method (1) provid[ed] patient information to a computing

device having routine input, memory, look-up, comparison, and

output capabilities and that (2) generat[ ed] a ranked listing of

available therapeutic treatment regimens and (3) generat[ ed]

advisory information for one or more therapeutic treatment

regimens in said ranked listing.

Id.

at 954-55. Claim 1 also included a computing device containing

a

set

of

'expert rules for

evaluating and selecting' from a stored 'plurality of different therapeutic treatment regimens,' as

well as 'advisory information useful for the treatment of a patient with different constituents of

said different therapeutic treatment regimens. ' Id. at *955. The Federal Circuit concluded that

this computing device limitation was broad and not meaningfully distinguishable from a

doctor's mind. Id. Thus, although the claimed method recited several rules ostensibly

narrowing the claimed invention, the claim was held to be not patent eligible, because section

101

does not embrace a process defined simply as using a computer to perform a series

of

mental steps that people, aware of each step, can and regularly do perform in their heads.

Id.

at

*954,

citing CyberSource

654 F.3d at 1373. Yet this was all that the claims themselves

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embraced.

Much like the rules listed in

SmartGene

the additional steps

of

the claims

of

the '270

patent are merely a series

of

mental steps that people, aware

of

each step, can and regularly do

perform in their heads. The claim limitations essentially recite a generic headhunting

or

matchmaking request

by

two parties. There is nothing inventive about any

of

the listed rules or

any other steps of the claims, including the order in which they are to

be

performed.

4

Instead, the

claim limitations simply lay out an interaction whereby two parties share a series

of

demands

with a third party, where one

of

the demands

of

both parties is that the parties' identities remain

anonymous unless and until there is at least some overlap between the demands and requirements

of

the two parties.

As the following hypothetical (articulated

by

Google, and not meaningfully distinguished

by Walker) shows, these steps can and routinely are performed by, for example, human

job

headhunters:

Limitations

o

270 Patent Claim 1 Routine Steps Performed when

Headhunting

receiving from a first party first data

Carol receives a resume from Alice, which

including an identity

of

said first party''

lists Alice's college degree, 8 years

of

sales

experience, interests, and other information,

including Alice's name

receiving from said first party at least two

Alice instructs Carol to disclose her education

first-party rules for releasing said first data

and sales experience to companies with open

including a rule for releasing the identity

of

sales positions but not to disclose her name

said first party''

unless the company is offering a salary

of

at

least $75,000

4

There is no dispute that the method claims for both patents can

be

practiced with or

without a computer. (Tr. at 10-12, 36-37)

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receiving from a second party a search

Bob asks Carol to find an employee with sales

request comprising at least one search

experience for his company

criterion

receiving from said second party second data

Bob tells Carol that the job at his company is

including an identity

of

said second party' ' a sales position that pays $100,000 in salary

and that the name ofhis company is Bob's

Software

receiving from said second party at least two

Bob instructs Carol that she can disclose

second-party rules for releasing said second information about the job opening to any

party data including a rule for releasing said applicant with sales experience and that she

identity of said second party' '

can provide the salary offer to any applicant

with a college degree but not to disclose the

name

of

his company unless the applicant has

more than 5 years of sales experience

processing said search request to determine

if

Carol checks to see

if

Alice has the necessary

said first data satisfies said search criterion sales experience requested

by

Bob

if said first data satisfies said search

Once Carol determines that Alice has the

criterion, then exchanging said first and

necessary sales experience for Bob, Carol

second data, except said identities

of

said first

provides Alice's college degree and years

of

and second parties, between said first and sales experience to Bob, but not Alice's

second parties in accordance with said first- name, and provides information to Alice

party and second- party rules

about the sales position available at

Bob's

company and the salary information, but not

the name ofBob's company, in accordance

with Alice 's instructions and Bob's

instructions

after said exchanging step, upon satisfying

After Carol provides Alice's sales experience

said first-party rule for releasing said identity

and college degree to Bob and provides

Bob's

of said first party, transmitting said identity of

salary offer and sales position available at

said first party to said second party, and after

Bob's

company to Alice, Carol gives Alice's

said exchanging step, upon satisfying said

name to Bob upon determining that

Bob's

second-party rule for releasing said identity

of

company is offering at least $75,000 in salary

said second party, transmitting said identity

of

and tells Alice the name of

Bob's

company

said second party to said first party

upon determining that Alice has more than 5

years of sales experience

Even after carefully reviewing the parties' briefs and the patents, and questioning the

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parties about Google's hypothetical at the hearing, the Court is unable to discern any reason why,

in Google's hypothetical, Carol would not

be

liable for infringement ofWalker's '270 patent.

Based on the undisputed evidence, and drawing all reasonable inferences in Walker's favor, the

Court concludes that every step of claim 1 of the '270 patent is performed in Google's routine

headhunting hypothetical. t follows that all the steps of the '270 patent are routine and

unconventional. To allow the claim to survive would disproportionately risk preempting a

building block

of

human interaction, retarding rather than promoting progress, contrary to the

very purpose patents are granted.

See

U.S. Const. Art. 8 ( The Congress shall have Power

To promote the Progress

of

Science and useful Arts, by securing for limited Times to Authors

and Inventors the exclusive Right to their respective Writings and Discoveries ).

The asserted dependent claims of the '270 patent fare no better. Those claims require

receiving and storing (claim 2 and 5) and narrowing the scope of a party's demands (claims 10

and 11) - but these additional steps again add no inventive element to the mental processes

claimed by the '270 patent. Similarly, the system claims recited in claims 23, 24, 27, 32, and 33

merely take the abstract idea of claims 1 2, 5, 10, and 11 and list generic computer components

(processor, memory) to implement the abstract idea. Even accepting that the use of a computer

increases speed and efficiency ofperforming the steps of the claims, and improves the likelihood

of

preserving the anonymity of the first and second parties, these characteristics do not save the

claims. As the Supreme Court has stated, the mere recitation

of

a generic computer cannot

transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract

idea while adding the words 'apply it' is not enough for patent eligibility.

Alice

134 S. Ct. at

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2358.

5

Accordingly, the Court will grant Google s motion with respect to Walker s 270 patent.

II. 272 Patent

The analysis is largely the same with respect to Walker s 272 patent and the Court

reaches the same conclusions as it did in connection with the 270 patent. Independent claim 1

of the 272 patent is a method claim; asserted dependent claims 2-4, 9-11, 19, 27, 28, 31, and 32

are also method claims and all depend from independent claim

1

Independent claim 65 is a

system claim.

Claim recites as follows:

1 A method for facilitating an exchange of

information between a first party and a second

party, comprising the steps of:

receiving first party information data from said first

party;

storing said first party information data in a secure

database;

receiving, from said first party, at least one first

party rule for releasing said first party information

data;

storing said at leas[t] one first party rule;

receiving, from said second party, a search request

to the secure database, said search request

comprising at least one search criterion to be

satisfied;

determining second party data relevant to said at

5

Plaintiff concedes that the system claims merely add generic computer components to

the method claims and, therefore, rise and fall with the method claims. (Tr. at 54)

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least one first party rule;

receiving from said second party at least one second party

rule for releasing said second party data;

processing said search request from said second

party to determine i said first party information

data satisfies said at least one search criterion;

i said first party information data satisfies said at

least one search criterion then:

communicating to said second party that said at

least one search criterion has been satisfied;

receiving a request from said second party for said

first party information data;

releasing said second party data pursuant to said

second party rule;

determining based on said second party data

whether said at least one first party rule has been

satisfied; and

i

said at least one first party rule has been satisfied

providing to said second party said first party

information data for which said at least one first

party rule has been satisfied.

The asserted dependent claims recite:

2.

The method according to claim 1 further

comprising the step of: authenticating authorship

o

said first party information data.

3. The method according to claim 2 wherein the step

o

authenticating includes the substep

o

executing a

cryptographic operation using a cryptographic key.

4.

The method according to claim 2 wherein the step

o

authenticating includes the substep

o

recognizing an identifier selected from the group

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consisting of a password a name and an

identification number.

9. The method according to claim 1 wherein the step

of determining second party data further comprising

the step of: receiving from said second party said

second party data corresponding to the second party.

10. The method according to claim 9 further

comprising the step of authenticating authorship of

the received second party data.

11.

The method according to claim 10 wherein the step

of authenticating includes the substep of

recognizing an identifier selected from the group

consisting of a password a name and an

identification number.

27. The method of claim 1 wherein the first party is a

job candidate and the second party is an employer.

28. The method of claim 27 wherein the first party

information data comprises at least one of an

identity of the job candidate an address of the job

candidate at least one vital statistic of the job

candidate a description of a work experience of the

job candidate an educational background of the job

candidate an interest of the job candidate a resume

of the job candidate a list

of

at least one publication

written y the job candidate and a list

of

at least

one award received by the job candidate.

31. The method of claim 1 wherein the first party and

the second party are individuals seeking a personal

relationship.

32. The method of claim 31 wherein the first party

information data comprises at least one

of

an

identity of the first party an address of the first

party a vital statistic of the first party a work

experience of the first party an educational

background of the first party and an interest

of

the

first party.

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Google contends that, [a]s with the claims of the

'270

patent, the method claims of the

'272 patent are likewise patent-ineligible because they are directed to a series

of

process steps

that are unconnected to any particular machine. (D.I. 251 at 12) Unlike claim 1 of the

'270

patent, the preamble to claim 1 of the '272 patent does not claim [a] method for operating a

computer system to facilitate an exchange Instead, claim 1

of

the '272 patent claims [a]

method for facilitating an exchange of information between a first party and a second party.

None of the limitations recited in the method claims of the

'272

patent recites the use of a

machine. The only structural element disclosed in Claim 1 is a secure database. ('272 patent

claim

1

( receiving, from said second party, a search request to the secure database ) However,

the secure database term has not been construed (no party asked the Court to do so, s D.I.

100 at 2) and is given its plain and ordinary meaning, which is not limited to a computer, but may

also include, for example, a locked file-cabinet. See, e.g., MySpace, Inc. v GraphOn Corp., 672

F.3d 1250, 1255, 1257 (Fed. Cir. 2012) (stating database means a collection of data within a

given structure that can be stored and retrieved, which would include paper filing cabinet).

Similarly, claim 3 recites executing a cryptographic operation using a cryptographic

key, but this process is also not tethered to any computer. Cryptographic operation has been

construed to mean operation to encrypt

or

decrypt data. (D.I. 232 at

1

Cryptographic key''

has been construed to mean data used as an input to an operation to encrypt or decrypt other

data. Id.) Executing a cryptographic operation using a cryptographic key would, therefore,

include something like the type of substitution cipher one might find in a newspaper (A=T, B=U,

etc.). Accordingly, claims 1 and 3 are not tied to a machine and cannot satisfy the machine

or

transformation test.

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20/24

Plain tif fs expert, Dr. Wills, opines that the 272 patent contains the following

meaningful limitations:

[ ] receiving party data from a first party and storing it in a secure

database;

[2] receiving rules from both a first and second party for releasing

their respective data;

[3] receiving a search request from a second party;

[4] processing the second party s search request to determine if

party data provided

by

a first party satisfies the search criterion

used; and

[

5]

if

the data provided

by

the first party satisfies the search

criterion of the second party s search request, the asserted

independent claims require communicating to the second party that

at least one search criterion has been satisfied, receiving a request

from the second party for data provided by the first party, releasing

the second party s data pursuant to the second party s rule,

determining whether the first party s rule is satisfied based on the

second party data, and, if the first party rule has been satisfied,

providing the first party data to the second party.

(D.I. 283

i

13) As with the steps

of

the 270 patent, however, these steps add nothing inventive

to the core concept of anonymously exchanging information about people, a practice that is

described in the patent s specification has having long been practiced by human headhunters and

matchmakers.

As it did with the 270 patent, Google has provided a hypothetical example, shown

below, demonstrating that the limitations of the 272 patent essentially recite an interaction

whereby two parties communicate with a third party and, after some threshold requirements of

both parties are met, the third party releases more information about the two parties to each other,

all ofwhich can be routinely performed by a headhunter:

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21/24

Limitation

o

272 Patent Claim 1 Routine Steps Performed when

Headhunting

''receiving first party information data from

Carol receives a resume from Alice, which

said first party lists Alice's college degree, 8 years

of

sales

experience, interests, and other information,

including Alice's name

storing said first party information data in a

Carol stores Alice's resume containing her

secure database

sales experience information in a locked

filing cabinet where Carol keeps files

receiving, from said first party, at least one

Alice instructs Carol to disclose her years

of

first party rule for releasing said first party sales experience only to employers offering a

information data

salary amount

of

over $75,000

storing said at leas[t] one first party rule Carol stores Alice's instruction in her filing

cabinet

receiving, from said second party, a search Carol receives from Bob a request to search

request to the secure database, said search her resume files to find

job

candidates who

request comprising at least one search have at least 5 years

of

sales experience

criterion to be satisfied

determining second party data relevant to Carol determines that

Bob's

salary offer of

said at least one first party rule $100,000 is relevant to Alice's instruction as

to whether Alice's years of sales experience

may be disclosed

receiving, from said second party, at least Carol receives an instruction from Bob to

one second party rule for releasing said release his offered salary amount only to

second party data candidates with at least 5 years

of

sales

expenence

processing said search request from said Carol reviews

Bob's

request to determine if

second party to determine if said first party Alice's level of sales experience satisfies

information data satisfies said at least one

Bob's

requirement ofhaving at least 5 years

search criterion

of

sales experience

if

said first party information data satisfies at Since Alice's experience meets Bob's

least one search criterion, then requirement, Carol tells Bob that she found a

communicating to said second party that said candidate with at least 5 years of sales

at least one search criterion has been expenence

satisfied

receiving a request from said second party Bob asks Carol for the candidate's sales

for said first party information data experience

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22/24

releasing said second party data pursuant to

Carol tells Alice about Bob's

salary offer

said second party rule

pursuant to Bob's instruction that his salary

offer can be disclosed to a candidate with at

least 5 years of sales experience

determining, based on said second party Based on

Bob's

salary offer amount, Carol

data, whether said at least one first party rule

determines whether she can comply with

has been satisfied

Alice's instruction regarding when to release

Alice's years

of

sales experience

if

said at least one first party rule has been

Since Bob is offering a salary

of

$100,000

satisfied, providing, to said second party, said

which satisfies Alice's requirement of a salary

first party information data for which said at offer of at least $75,000 before disclosing

least one first party rule has been satisfied

Alice's sales experience, Carol provides

information about Alice's 8 years of sales

experience to Bob

As with the '270 patent hypothetical, here again Walker has no persuasive response to the

suggestion that Carol is practicing all of the steps of the '272 patent. See Tr. at 37-38) Because

claim 1

of

the '272 patent can be performed entirely in a person's mind using routine and

conventional steps, it is not directed to patentable subject matter.

See CyberSource Corp.,

654

F.3d at 1373 ( [A] method that can be performed by human thought alone is merely an abstract

idea and is not patent-eligible under

101. Methods which can

be

performed entirely in the

human mind are unpatentable not because there is anything wrong with claiming mental method

steps as part of a process containing non-mental steps, but rather because computational methods

which can be performed

ntir ly

in the human mind are the types ofmethods that embody the

'basic tools of scientific and technological work' that are free to all men and reserved exclusively

to none. ) (emphasis in original).

The dependent claims add nothing meaningful. Claims 2, 4, 10, and merely require

confirming that the parties are who they claim to be by, for example, reading their names on their

resumes and comparing them to names on driver's licenses. Claim 9 requires determining

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23/24

second party data

by

getting the data from the second party; e.g., Carol receives from Bob

information about the $100,000 salary offer for the

job

available at

Bob's

company. Claims 27

and 3 simply limit the claimed method to interactions between

job

candidates and employers

and individuals seeking personal relationships, respectively. Claims 28 further defines first

party information data as comprising fundamental job-seeking information such as the first

party's name, address, date

of

birth, work experience, educational background, personal interest,

list

of

publications, and list

of

awards. Similarly, claim 32 defines first party information data

as comprising basic personal information routinely used in matchmaking, including the party 's

name, address, date

of

birth, work experience, educational background, and interests. Notably,

the patent's specification (like that

of

the

'270

patent) recognizes that these two potential uses for

the purported invention (job-hunting and matchmaking) have been practiced for years.

See

'272

patent col. 2:43-48, 3:48-51)

Claim 3, as discussed earlier, adds the step

of

using a cryptographic key to execute a

cryptographic operation when authenticating the first party's data. These steps can

be

performed

entirely within the human mind. In sum, because the entirety

of

claim 1 and each

of

its asserted

dependent claims can be performed in a person's mind, and because the claim limitations merely

append routine and ordinary steps to an abstract idea, the claims are not directed to patentable

subject matter.

Finally, independent claim

65

applies the method disclosed in claim 1

by

way

of

a generic

computer with standard computer components including a memory, a processor, and

a

communication port. None

of

these components converts a general computer into a specialized

computer. As discussed above, merely reciting the use

of

a generic computer in implementing an

22



24/24

unpatentable abstract idea does not inject patentable subject matter into an invention.

ON LUSION

It bears emphasis that, as the Supreme Court recently explained in

Alice

134

S

Ct. at

2354-55:

[I]n applying the

101

exception, [the Court] must distinguish

between patents that claim the building blocks ofhuman ingenuity

and those that integrate the building blocks into something more

thereby transforming them into a patent-eligible invention. The

former would risk disproportionately tying up the use of the

underlying ideas and are therefore ineligible for patent protection.

The latter pose no comparable risk ofpre-emption, and therefore

remain eligible for the monopoly granted under our patent laws.

Here, Walker contends that the asserted claims of the patents-in-suit integrate the

abstract idea

of

controlled information exchange between anonymous parties into something

more thereby transforming this building block ofhuman ingenuity into a patent-eligible

invention. However, the Court fails to see anything more in the asserted claims than the

abstract idea, implemented

in a conventional manner using a general purpose computer, and is

compelled to conclude that the patents risk disproportionately tying up the use of the underlying

ideas. Accordingly, the asserted claims of the patents-in-suit are invalid due to lack of

patentable subject matter and Google's motion must e granted.

n appropriate Order follows.

23


walker digital v google (del)

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